By Yuri Mikulka and Thomas F. Zuber of Zuber & Taillieu LLP
The Federal Circuit has established a heightened pleading requirement for claims of inequitable conduct, requiring more than “a mere showing that art or information having some degree of materiality was not disclosed.” In Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 1331 (Fed. Cir. 2009) (cit. omitted), the Court… More...
Following the lead of the U.S. Supreme Court in its 2007 Microsoft Corp. v. AT&T Corp. decision, the Federal Circuit ruled that 35 U.S.C. Section 217(f) is not applicable to method claims. In Cardiac Pacemakers, the Court expressly overruled its own previous controversial decision in Union Carbide, More...
The Federal Circuit has resolved prior inconsistencies in its case law and established a bright line rule to define infringement in product-by-process claims, holding that such infringement requires practice of the claimed process by the alleged infringer. In Abbott Labs v. Sandoz, 566 F.3d 1282 More...
The Federal Circuit court applied the “obvious to try” test from KSR International v. Teleflex Inc. to biotechnology patent applications, and essentially eviscerated the obviousness standard once applied to biotech patents by the Federal Circuit in In re Deuel. While the decision in In re Kubin More...
In one of the first post-Bilski decisions by a Federal Circuit panel, the court confirmed the Bilski holding that business methods do not constitute patentable processes if they fail the machine-or-transformation test. Specifically, in In re Ferguson, 558 F.3d 1359 (Fed Cir. 2009), the Court held More...
The Federal Circuit largely upheld rules promulgated by the PTO to help relieve its enormous backlog of patent applications. The district court had determined that the rules were substantive and therefore beyond the PTO’s legal authority. In Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009), a split More...
In Rothman v. Target Corp., 556 F.3d 1310 (Fed. Cir. 2009), the Federal Circuit upheld a district court’s refusal to set aside a jury finding that the plaintiff’s patent was invalid due to obviousness, but reversed the trial court on its finding of inequitable conduct by the prosecuting More...
In Boston Scientific v. Cordis, 554 F.3d 982 (Fed. Cir. 2009), the Court of Appeals for the Federal Circuit overturned both the PTO Examiner and the district court trial jury in invalidating Boston Scientific’s patent claims due to invalidity. Specifically, the appellate court determined that More...
In the wake of two recent federal appeals cases -- In re Volkswagen of America Inc., 545 F.3d 304 (5th Cir. 2008) and In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) – the Eastern District of Texas has lost some of its steam as the most notable “rocket docket” of patent infringement More...
In its highly anticipated en banc opinion in Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008), the Court of Appeals for the Federal Circuit rejected the point of novelty test for design patent infringement. The Court held that the “ordinary observer” test set forth in Gorham v. White is More...
The eagerly-awaited decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) -- issued by the U.S. Court of Appeals for the Federal Circuit sitting en banc -- significantly narrowed the scope of patentability for business method and process patents. The Court essentially discounted the More...
